Overview of Intellectual Property High Court Case (Civil Appeal) No. 10040 of 2023
Case Overview
Case: Whether the physician’s act fell within the scope of patent rights, considering the exceptions under the Patent Act relating to medical practices and dispensing (Articles 29 and 69(3)).
Key Issue: Whether the physician’s act fell within the scope of patent rights, considering the exceptions under the Patent Act relating to medical practices and dispensing (Articles 29 and 69(3)).
Summarization of the case
The patented invention (Patent No. 5186050) concerns a composition for promoting subcutaneous tissue growth, containing autologous plasma, basic fibroblast growth factor (b-FGF), and a fat emulsion.
The physician argued (1) that the invention was substantially a patent on a medical act and therefore invalid, and (2) that his act of preparing the composition constituted “dispensing” by a physician, to which patent rights do not extend under Article 69(3) of the Patent Act.
The Court rejected both arguments. It held that:
- Even though the composition involves components derived from the patient and is administered back to the same person, the invention itself is a “product invention”, not a “method invention” concerning medical treatment, and thus is patentable.
- The physician’s act did not fall within the “dispensing exception” under Article 69(3), as the composition was used for cosmetic purposes (breast augmentation), not for the diagnosis, treatment, or prevention of disease.
Significance of the Case
This decision clarifies the boundary between patentable “medical product” inventions and non-patentable “medical method” inventions.
It also limits the scope of the dispensing exception under Article 69(3), emphasizing that it applies only to medical acts for therapeutic purposes, not to cosmetic or aesthetic procedures.
The judgment underscores that while physicians must be free from patent restrictions in performing medical treatments, the same does not apply to aesthetic procedures unrelated to disease treatment.
This case thus provides valuable guidance on interpreting the relationship between medical ethics, industrial applicability, and the limits of patent enforcement in the medical and cosmetic fields.
